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Simplilearn Solutions Private Limited vs Simplilearn Education Consulting ... on 18 May, 2022

Author: Prathiba M. Singh

Bench: Prathiba M. Singh

                                                           Signature Not Verified
                                                           Digitally Signed
                                                           By:DEVANSHU JOSHI
                                                           Signing Date:20.05.2022
                                                           18:06:38


$~1
*     IN THE HIGH COURT OF DELHI AT NEW DELHI
+                   CS(COMM) 325/2022 & I.As. 7775-79/2022
      SIMPLILEARN SOLUTIONS PRIVATE LIMITED        ..... Plaintiff
                   Through: Mr. Aayushmaan Gauba, Ms. Gunjan
                            Chhabra, Advocates (M:9717008833)
                   versus

      SIMPLILEARN EDUCATION CONSULTING PRIVATE
      LIMITED                               ..... Defendant
                   Through: None.
      CORAM:
      JUSTICE PRATHIBA M. SINGH
                   ORDER

% 18.05.2022

1. This hearing has been done through hybrid mode. I.A. 7776/2022 (exemption from filing original documents)

2. This is an application seeking exemption from filing original documents. Recording the Plaintiff's undertaking that the inspection of original documents shall be given, if demanded, and that the original documents shall be filed prior to the stage of admission/denial, the exemption is allowed.

3. I.A.7776/2022 is disposed of.

I.A. 7777/2022 (for additional documents)

4. This is an application seeking leave to file additional documents under the Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act, 2015 (hereinafter, 'Commercial Courts Act'). The Plaintiff, if it wishes to file additional documents at a later stage, shall do so strictly as per the provisions of the Commercial Courts Act.

5. I.A. 7777/2022 is disposed of.

I.A. 7778/2022 (exemption from advance service)

6. In view of the fact that the Plaintiff has sought ex parte ad-interim injunction, exemption from advance service to the Defendant is granted.

7. I.A. 7778/2022 is disposed of.

I.A. 7779/2022 (u/S 12-A)

8. This is an application seeking exemption from instituting pre- litigation mediation. In view of the orders passed in CS (COMM) 132/2022 titled Upgrad Education v. Intellipaat Software, exemption is granted.

9. I.A. 7779/2022 is allowed and disposed of.

CS(COMM) 325/2022

10. Let the plaint be registered as a suit.

11. Issue summons to the Defendant through all modes upon filing of Process Fee.

12. The summons to the Defendant shall indicate that a written statement to the plaint shall be positively filed within 30 days from date of receipt of summons. Along with the written statement, the Defendant shall also file an affidavit of admission/denial of the documents of the Plaintiff, without which the written statement shall not be taken on record.

13. Liberty is given to the Plaintiff to file a replication within 15 days of the receipt of the written statement(s). Along with the replication, if any, filed by the Plaintiff, an affidavit of admission/denial of documents of the Defendant, be filed by the Plaintiff, without which the replication shall not be taken on record. If any of the parties wish to seek inspection of any documents, the same shall be sought and given within the timelines.

14. List before the Joint Registrar for marking of exhibits on 25th July, CS(COMM) 325/2022 Page 2 of 8 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:20.05.2022 18:06:38 2022. It is made clear that any party unjustifiably denying documents would be liable to be burdened with costs.

15. List before Court on 21st September, 2022.

I.A. 7775/2022 (for stay)

16. The Plaintiff- Simplilearn Solutions Private Limited has filed the present suit for permanent injunction seeking protection of its registered trademark "SIMPLILEARN". The Plaintiff is a company which was incorporated on 8th April, 2010. It commenced the use of the word "SIMPLILEARN" as a trademark in June, 2011. The said mark is also registered as a wordmark under trade mark number 2276055 in India in Class-41 since February, 2012. The trademark application of the Plaintiff for the mark was filed on 2nd February, 2012 with user claim from 21st June, 2011.

17. The case of the Plaintiff in the suit is that it is a company engaged in the ed-tech industry providing training in disciplines such as cloud computing, data science and digital marketing through online mode. It is asserted by the Plaintiff that it is the world's #1 online bootcamp providing digital skills training to help individuals acquire various skills for being able to find employment. It also offers various certification programs with world- renowned universities. According to the Plaintiff, its turnover is approximately 5 Billion Rupees in the financial year 2021-2022. Apart from the word mark registration referred above, the mark 'SIMPLILEARN' of the Plaintiff is registered in various logo forms and devices in Classes 41 and

35. Furthermore, its applications for the registration of the said mark in Classes 16, 9 as also Class 42 are pending. The Plaintiff's websites www.simplilearn.com and www.simplilearn.net are accessed by millions of CS(COMM) 325/2022 Page 3 of 8 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:20.05.2022 18:06:38 students on a daily basis. The Plaintiff also claims that it has more than 2 million subscribers worldwide on its YouTube channel.

18. In the present case, the Plaintiff is aggrieved by the fact that the Defendant has adopted the word 'SIMPLILEARN' in an identical spelling for identical services, i.e., educational services as its trade name/corporate name. The Plaintiff addressed a notice dated 6th February, 2020 to the Defendant asking it to cease and desist from using the name 'SIMPLILEARN' as its incorporated name. However, vide reply dated 17th November, 2021, the Defendant failed to comply with the requisitions of the Plaintiff and claimed that the word 'SIMPLILEARN' was coined by it independently. Moreover, it was contended by the Defendant that the services offered by the Defendant are substantially distinct and not likely to cause confusion. Ld. Counsel for the Plaintiff submits that the Plaintiff also addressed two applications under section 16 of the Companies Act, 2013 to the Regional Director, Ministry of Corporate Affairs, Ahmedabad on 12th February, 2020 and 1st December, 2021. However, no response has been received from the Ministry of Corporate Affairs till date. He submits that the Defendant's mala fides are evident from the fact that the Defendant has copied the mark of the Plaintiff "SIMPLILEARN" as its corporate name and has also started using another well-known trademark of a third party as its domain name.

19. Heard the ld. Counsel for the Plaintiff and perused the records. A perusal of the record shows that the word "SIMPLILEARN" is being used by the Plaintiff since 2010 and the same is registered in its favour. The mark of the Plaintiff has been adopted as an essential feature of the Defendant's corporate name "SIMPLILEARN EDUCATION CONSULTING PRIVATE CS(COMM) 325/2022 Page 4 of 8 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:20.05.2022 18:06:38 LIMITED". In the reply to the cease and desist notice given on behalf of the Defendant it is admitted as under:

"1. That Our Client is an education consulting company that is engaged in providing consultancy services to students interested in pursuing education abroad. Our Client guides students through the process and depending on their location, their aptitude, interest and other factors suggest the best options available to them. That Our Client's business is mainly by means of word of mouth and referrals.

2. That Our Client is also into the business of Data Analysis and Machine Learning and provide their assistance across the world, mainly in US, UK, Canada and Australia. Our Client also owns the domain name 'educompro.com' but the website for the same is still under development but no business has been conducted with this domain name."

20. It is clear from the above reply, the services in which the Defendant is engaged are also identical to that of the Plaintiff. Thus, the use of the registered trademark of the Plaintiff by the Defendant as part of the corporate name constitutes infringement under Section 29(5) of the Trademark Act, 1999. Furthermore, the expression "SIMPLILEARN" though derived from the words 'Simply' and 'Learn' is distinctive inasmuch as the spelling has been altered and the two words have been juxtaposed together to create the said mark. The said invented mark has been identically copied by the Defendant.

21. In addition, under Section 16 of the Companies Act, 2013, the name of a company which is identical with or too nearly resembles a registered mark of an any proprietor under the Trade Marks Act, 1999 is liable to be CS(COMM) 325/2022 Page 5 of 8 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:20.05.2022 18:06:38 rectified. The said provision reads as under:

"16. Rectification of name of company.-- (1) If, through inadvertence or otherwise, a company on its first registration or on its registration by a new name, is registered by a name which,-- XXX

(b) on an application by a registered proprietor of a trade mark that the name is identical with or too nearly resembles to a registered trade mark of such proprietor under the Trade Marks Act, 1999, made to the Central Government within three years of incorporation or registration or change of name of the company, whether under this Act or any previous company law, in the opinion of the Central Government, is identical with or too nearly resembles to an existing trade mark, it may direct the company to change its name and the company shall change its name or new name, as the case may be, within a period of six months from the issue of such direction, after adopting an ordinary resolution for the purpose."

22. In the present case, the Plaintiff has given notice to both, the Defendant and also to the Regional Director, Ministry of Corporate Affairs, Ahmedabad. It is clear that the word "SIMPLILEARN" is used by the Defendant as a corporate name in relation to identical services. In the opinion of the Court, this would create confusion even if the said mark is used as a corporate name. It has been held in Montari Overseas Ltd. v. Montari Industries Ltd. 1995 (15) PTC 399 (Del) that use of a registered mark as part of a corporate name can result in passing off of Defendant's business as that of the Plaintiff. The relevant portion of the judgment reads as under:

(13) It is well settled that an individual can trade under his own name as he is doing no more than making a truthful statement of the fact which he has a legitimate interest in making. But while adopting his name as the trade name for In's business he is required to act honestly and bonafidely and not with a view to cash upon the goodwill & reputation of another. An individual has the latitude of trading under his own name is in recognition of the fact that he does not have choice of name which is given to him. However in the case of a Corporation the position is different.

Unlike an individual who has no say in the matter of his name, a company can give itself a name.

Normally a company can not adopt a name which is being used by another previously established company, as such a name would be undesirable in view of the confusion which it may cause or is likely to cause in the minds of the public. Use of name by a company can be prohibited if it has adopted the name of another company. It is well settled that no company is entitled to carry on business in a manner so as to generate a belief that it is connected with the business of another company, firm or an individual. The same principle of law which applies to an action for passing off of a trade mark will apply more strongly to the passing off of a trade or corporate name of one for the other. Likelihood of deception of an unwary and ordinary person in the street is the real test and the matter must be considered from the point of view of that person. Copying of a trade name amounts to making a false representation to the public from which they have to be protected. Besides the name of the company acquires reputation and goodwill, and the company has a right too to protect the same. A competitor cannot usurp the goodwill and CS(COMM) 325/2022 Page 7 of 8 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:20.05.2022 18:06:38 reputation of another. One of the pernicious effects of adopting the corporate name of another is that it can injure the reputation and business of that person.

23. In view of the above, the Plaintiff has made out a prima facie case for grant of an injunction. Balance of convenience lies in the favour of the Plaintiff and if the relief is not granted, irreparable harm would be caused to the Plaintiff. The Defendant is accordingly restrained from conducting its business and offering services under the corporate name/expression "SIMPLILEARN" or any other name that is identical or deceptively similar to the mark of the Plaintiff in relation to education consulting, I.T. or any other cognate or allied services till the next date of hearing. Since the corporate name of the Defendant has been registered since January, 2020, the Defendant is given three months' time to change over to a new corporate name.

24. Compliance of Order XXXIX Rule 3 CPC be made within one week.

25. List before Court on 21st September, 2022.

PRATHIBA M. SINGH, J.

MAY 18, 2022/aman/Sk CS(COMM) 325/2022 Page 8 of 8